(327) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. PTO-T-2007-0051]
RIN 0651-AC18
Changes in Rules Regarding Filing
Trademark Correspondence by Express Mail or
Under a Certificate of Mailing or Transmission
AGENCY: United States Patent and Trademark Office, Commerce.
ACTIONS: Proposed rule.
SUMMARY: The United States Patent and Trademark Office ("Office")
proposes to amend the Trademark Rules of Practice to provide that the
procedures for filing trademark correspondence by Express Mail or under
a certificate of mailing or transmission do not apply to certain
specified documents for which an electronic form is available in the
Trademark Electronic Application System ("TEAS"). The purpose of the
rule change is to promote electronic filing, increase efficiency, and
improve the quality and integrity of critical data in the Office's
automated systems.
DATES: Comments must be received by April 29, 2008 to ensure consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to TMMailingRules@uspto.gov. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery
to the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Mary Hannon; or by electronic mail message via the Federal eRulemaking
Portal. See the Federal eRulemaking Portal Web site
(http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal. The comments will be available
for public inspection on the Office's Web site at http://www.uspto.gov, and
will also be available at the Office of the Commissioner for Trademarks,
Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia.
FOR FURTHER INFORMATION: Contact Mary Hannon, Office of the Commissioner
for Trademarks, by telephone at (571) 272-9569.
SUPPLEMENTARY INFORMATION: References below to "the Act," "the Trademark
Act," or "the statute" refer to the Trademark Act of 1946, 15 U.S.C.
1051 et seq., as amended. References to "TMEP" or "Trademark Manual of
Examining Procedure" refer to the 5th edition, September 2007.
Express Mail Procedure
Section 2.198 of the Trademark Rules of Practice provides a procedure for
obtaining a filing date as of the date that correspondence is deposited with
the United States Postal Service ("USPS") as "Express Mail." Currently,
§ 2.198(a)(1) provides that the Express Mail procedure does not apply to the
following documents for which an electronic form is available in TEAS:
applications for registration of marks; amendments to allege use under
section 1(c) of the Trademark Act; statements of use under section 1(d)
of the Act; requests for extension of time to file a statement of use under
section 1(d) of the Act; affidavits or declarations of use under section 8
of the Act; renewal applications under section 9 of the Act; and requests
to change or correct addresses. If any of these documents are filed by
Express Mail, they are given a filing date as of the date of receipt in the
Office (Eastern time) rather than the date of deposit with the USPS. These
exclusions have been in effect since June 24, 2002. See notice at 67 FR
36099 (May 23, 2002). The Express Mail procedure also does not apply to

responses to notices of irregularity under § 7.14 and requests for
transformation under § 7.31, pursuant to § 7.4(b)(2).
The Office proposes to amend § 2.198(a)(1) to add exclusions for the
following additional documents for which a form is available in TEAS:
Preliminary amendments; responses to examining attorneys' Office actions;
requests for reconsideration after final action; responses to suspension
inquiries or letters of suspension; petitions to revive abandoned
applications under 37 CFR 2.66; requests for express abandonment of
applications; affidavits or declarations of incontestability under section
15 of the Act; requests for amendment of registrations under section 7(e)
of the Act; requests for correction of applicants' mistakes under section
7(h) of the Act; Madrid-related correspondence filed under § 7.11, § 7.14,
§ 7.21, § 7.28 or § 7.31; appointments or revocations of attorney or
domestic representative; and notices of withdrawal of attorney.
The Office further proposes to amend § 7.4 to provide that international
applications under § 7.11 and subsequent designations under § 7.21, when
filed by mail, will be accorded a filing date as of the date of receipt in
the Office (Eastern time) rather than the date of deposit as Express Mail.
Certificate of Mailing or Transmission Procedure
Under 37 CFR 2.197, a "certificate of mailing or transmission"
procedure exists to avoid lateness due to mail delay. Correspondence is
given a filing date as of the date of receipt in the Office, but is
considered to be timely even if received after the due date, if the
correspondence was: (1) Deposited with the USPS as first class mail or
transmitted to the Office by facsimile transmission on or before the due
date; and (2) accompanied by a certificate attesting to the date of
deposit or transmission. Currently, this procedure may be used for all
trademark correspondence except applications for registration of marks and
correspondence related to the Madrid Protocol under §§ 7.11, 7.14, 7.21,
7.23, 7.24 and 7.31. In limited circumstances, certificates of transmission
by electronic mail are permissible. See Trademark Manual of Examining
Procedure ("TMEP") sections 304.01 and 304.02 regarding the types of
trademark correspondence that can be filed by e-mail.
The Office proposes to amend § 2.197(a)(2) to provide that the
certificate of mailing and certificate of transmission procedures do not
apply to the following documents for which an electronic form is available
in TEAS: Amendments to allege use; statements of use; requests for extension
of time to file a statement of use; preliminary amendments; responses to
examining attorneys' Office actions; requests for reconsideration after
final action; responses to suspension inquiries or letters of suspension;
petitions to revive abandoned applications under 37 CFR 2.66; requests for
express abandonment of applications; affidavits or declarations of use
under section 8 of the Act; renewal applications under section 9 of the Act;
affidavits or declarations of incontestability under section 15 of the Act;
requests for amendment of registrations under section 7(e) of the Act;
requests for correction of applicants' mistakes under section 7(h) of the
Act; appointments or revocations of attorney or domestic representative;
notices of withdrawal of attorney; and requests to change or correct
addresses.
Benefits of Proposed Change
The certificate of mailing, certificate of transmission, and Express
Mail procedures were created to respond to public concern about the loss
of filing dates due to mail delays or loss of documents within the Office.
These procedures are no longer necessary because electronic filing provides
a better alternative.
Applicants, registrants, and their attorneys can ensure a "date certain"
for a document by filing through TEAS, which is available 24 hours a day,
7 days a week. Under § 2.195(a)(2), correspondence filed via TEAS is
considered to have been filed on the date that the Office receives a

complete transmission of the correspondence, regardless of whether that date
is a Saturday, Sunday, or a Federal holiday within the District of Columbia.
Unlike Express Mail and certificates of mailing/transmission, TEAS
assures filers that the Office actually received the document submitted.
When a document is filed electronically, the Office receives it within
seconds after filing, and TEAS almost immediately displays a "Success" page
confirming receipt, which may be printed or copied and pasted into an
electronic record for storage. This page provides the filer with evidence
of filing should any question ever arise as to the filing date of the
document. If the "Success" page does not appear within seconds, then the
filing was not completed successfully. Thus, no doubt exists as to whether
a document was transmitted successfully. TEAS also sends a separate e-mail
acknowledgment of receipt that includes a summary of the filed information
and general processing information.
TEAS documents are extremely unlikely to be lost or misplaced within
the Office. Electronic filing creates an automatic entry of receipt of the
filing into the Office's automated system, which prevents improper
abandonment or cancellation due to delays in matching papers with files.
The Office has experienced very few situations in which parties claim that
electronically filed documents have been lost. In fact, in almost all
instances in which parties have claimed that electronically filed documents
have been lost, the Office has later determined that although the party
successfully validated the intended filing, the party never successfully
completed the actual electronic transmission process and never got a
"Success" page.
When a document is filed electronically, the data provided by the
applicant is transferred directly into the Office's databases, so very
few, if any, data entry errors arise. This assures customers that their
application/registration files are complete; and improves the quality,
accuracy and completeness of the information available to the public in
Office databases.
Because electronic filing eliminates delays caused by mailing, manual
data capture and paper processing, TEAS documents are processed more quickly
and entered into the automated systems (and therefore made available to
Office employees and members of the public who search Office records
for conflicting marks) sooner than their paper counterparts. This increases
efficiency, reduces pendency, and enables the Office to provide a higher
level of customer service to all applicants and registrants. Electronic
filing provides a level of consistency, accuracy, and predictability that
a paper-based process cannot.
In those rare situations when TEAS is unavailable due to technical
problems, mechanisms are in place to obtain a filing date as of the date of
the attempted filing. The filer may provide evidence that the filing was
attempted through TEAS but TEAS was unavailable due to technical problems,
such as a computer screen printout showing receipt of a "Fatal Error -
Access Denied" error message, or a copy of an e-mail message from the TEAS
Help Desk stating that the TEAS application forms were temporarily
unavailable. See TMEP sections 1711, 1712.01 and 1712.02.
Rule Making Requirements
Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866.
Administrative Procedure Act: This rule merely involves rules of agency
practice and procedure within the meaning of 5 U.S.C. 553(b)(A). Therefore,
this rule may be adopted without prior notice and opportunity for public
comment under 5 U.S.C. 553(b) and (c), or thirty-day advance publication
under 5 U.S.C. 553(d).
However, the Office has chosen to seek public comment before implementing
the rule.

Regulatory Flexibility Act: As prior notice and an opportunity for public
comment are not required pursuant to 5 U.S.C. 553 (or any other law),
neither a regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See
5 U.S.C. 603.
Unfunded Mandates: The Unfunded Mandates Reform Act requires, at
2 U.S.C. 1532, that agencies prepare an assessment of anticipated costs and
benefits before issuing any rule that may result in expenditure by State,
local, and tribal governments, in the aggregate, or by the private sector,
of $100 million or more (adjusted annually for inflation) in any given year.
This rule would have no such effect on State, local, and tribal governments
or the private sector.
Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Paperwork Reduction Act: This notice involves information collection
requirements which are subject to review by the Office of Management and
Budget under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.).
The collection of information in this notice have been reviewed and
approved by the OMB under OMB control numbers: 0651- 0009, 0651-0054,
0651-0055 and 0651-0056.
The agency is not resubmitting an information collection package to
OMB for its review and approval because the changes in this notice are
limited to amending the rules of practice to support further
implementation of the Office's Trademark Electronic Application System.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reduction of this burden
to: (1) The Office of Information and Regulatory Affairs, Office of
Management and Budget, New Executive Office Building, Room 10202,
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer
for the Patent and Trademark Office; and (2) Commissioner for Trademarks,
P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office proposes to amend
parts 2 and 7 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR part 2 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Amend § 2.197 by revising paragraph (a)(2) to read as follows:

§ 2.197 Certificate of mailing or transmission.
(a) * * *
(2) The procedure described in paragraph (a)(1) of this section does not
apply to:
(i) Applications for the registration of marks;
(ii) Amendments to allege use under section 1(c) of the Act;
(iii) Statements of use under section 1(d) of the Act;
(iv) Requests for extension of time to file a statement of use under
section 1(d) of the Act;
(v) Preliminary amendments;
(vi) Responses to examining attorneys' Office actions;
(vii) Requests for reconsideration after final action;
(viii) Responses to suspension inquiries or letters of suspension;
(ix) Petitions to revive abandoned applications under § 2.66;
(x) Requests for express abandonment of applications;
(xi) Affidavits or declarations of use under section 8 of the Act;
(xii) Renewal applications under section 9 of the Act;
(xiii) Affidavits or declarations of incontestability under section
15 of the Act;
(xiv) Requests for amendment of registrations under section 7(e) of
the Act;
(xv) Requests for correction of applicants' mistakes under section
7(h) of the Act;
(xvi) Madrid-related correspondence filed under § 7.11, § 7.14,
§ 7.21, § 7.23, § 7.24, § 7.28 or § 7.31;
(xvii) Appointments or revocations of attorney or domestic
representative;
(xviii) Notices of withdrawal of attorney; and
(xix) Requests to change or correct addresses.
* * * * *
3. Amend § 2.198 by revising paragraphs (a)(1)(v), (vi) and (vii), and
adding new paragraphs (a)(1)(viii) through (xix), to read as follows:
§ 2.198 Filing of correspondence by "Express Mail."
(a)(1) * * *
(v) Preliminary amendments;
(vi) Responses to examining attorneys' Office actions;
(vii) Requests for reconsideration after final action;
(viii) Responses to suspension inquiries or letters of suspension;
(ix) Petitions to revive abandoned applications under § 2.66;
(x) Requests for express abandonment of applications;
(xi) Affidavits or declarations of use under section 8 of the Act;
(xii) Renewal applications under section 9 of the Act;
(xiii) Affidavits or declarations of incontestability under section
15 of the Act;
(xiv) Requests for amendment of registrations under section 7(e) of
the Act;
(xv) Requests for correction of applicants' mistakes under section
7(h) of the Act;
(xvi) Madrid-related correspondence filed under § 7.11, § 7.14,
§ 7.21, § 7.28 or § 7.31;
(xvii) Appointments or revocations of attorney or domestic
representative;
(xviii) Notices of withdrawal of attorney; and
(xix) Requests to change or correct addresses.
* * * * *
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO
THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS

4. The authority citation for 37 CFR Part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
5. Amend § 7.4 by revising paragraphs (b)(1) and (2) to read as follows:
§ 7.4 Receipt of correspondence.
* * * * *
(b) * * *
(1) Requests to record changes in the International Register under
§ 7.23 and § 7.24, and petitions to the Director to review an action of the
Office's Madrid Processing Unit, when filed by mail, will be accorded the
date of receipt in the Office, unless they are sent by Express Mail pursuant
to § 2.198 of this chapter, in which case they will be accorded the date of
deposit with the United States Postal Service.
(2) International applications under § 7.11, responses to notices of
irregularity under § 7.14, subsequent designations under § 7.21, requests to
note replacement under § 7.28, and requests for transformation under § 7.31,
when filed by mail, will be accorded the date of receipt in the Office.
* * * * *
February 22, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1328 OG 200]